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World Intellectual Property Organization
BASIC FACTS about the
PATENT COOPERATION TREATY (PCT)
The world-wide system for simplified
multiple filing of patent applications
Do you want to protect your invention in several countries?
If so, you should consider the advantages that are offered by filing an
"international" patent application under the Patent Cooperation
Treaty (the "PCT"). By filing one international patent application,
you can simultaneously seek protection for an invention in each of a large
number of countries.
Do you want to evaluate your chances of protecting your invention
before major costs in foreign countries are incurred?
If your answer is yes, you should consider that the "international
search report" contains a list of documents relevant as to prior art
which you can evaluate and which is sent to all of the countries in which
your international patent application has effect. You also have the option
of obtaining an international preliminary examination report, which gives
you even more information about patentability of your invention before
you incur the high costs of the patent granting procedure in each of
those countries.
Do you want to keep open your options to protect your invention while
investigating its commercial possibilities abroad?
If you do, you should consider the extra time you gain when you file
an international patent application. 18 months more than a traditional
patent system.
Do you want to have strong patents abroad?
If so, you should take into account the benefits of the international
standards which are applied by the “International Searching
Authorities” and the “International Preliminary Examining
Authorities” when carrying out the international search and the
international preliminary examination of your application. Any patents
subsequently granted by the national or regional Offices on the
international application can be relied on by the applicant to a
greater extent than would have been the case without the benefit of
the international search report and the international preliminary
examination report.
What are the basic facts about the PCT?
Set out below are the
basic facts which you should know about the PCT. For further
information, refer to the end of this brochure.
(1) Your right to file an international patent application
You are entitled to file an international patent application if you
are a national or resident of one of the
PCT Contracting States which are listed at the end of this brochure.
(2) Where to file your international patent application
You can file an international patent application with your national
Patent Office which will act as a PCT “receiving Office”
or, unless not permitted by national security provisions in your
national law, with the International Bureau of WIPO, at the address
indicated at the end of this brochure. If you are a national or resident
of a country which is party to one of certain regional patent treaties
(the ARIPO Harare Protocol, the OAPI Agreement, the Eurasian Patent
Convention and the European Patent Convention), you may alternatively
file your international patent application with the regional Patent
Office concerned, if permitted by the applicable national law.
(3) Effect of an international patent application
Provided it complies with the minimum requirements for obtaining an
international filing date, your international application has the
effect of a national patent application in those PCT Contracting States
which you have “designated” in your application. It has the
effect of a regional patent application in those PCT Contracting States
which are also party to a regional patent treaty (the ARIPO Harare Protocol,
the Eurasian Patent Convention, the European Patent Convention and the OAPI
Agreement), provided they are designated for the regional patent concerned.
(It should be noted that, for some of these States, only a regional patent
can be obtained via the PCT.) Because an international patent application
must be prepared in accordance with certain requirements set out in the
Treaty and Regulations, which have become international standards effective
in all of the PCT Contracting States, subsequent adaptation to varying
national (or regional) formal requirements (and the cost associated therewith)
will not be necessary. The granting of a patent remains the responsibility
of the national or regional Offices but the start of the processing of the
application before those Offices (the “national phase”
or “regional phase”), including examination as to substance,
is generally delayed until after the end of the 30th month from the
priority date (see (13), below).
(4) Cost of filing an international patent application
Because an international patent application is effective in all
designated PCT Contracting States, you do not have to incur the costs
that would arise if you prepared and filed separate applications for
all of those States, and you have to pay only a single set of fees for
filing the international patent application with the PCT receiving
Office. Information about these fees can be obtained from the receiving
Offices (see (2), above) or in the PCT Applicant’s Guide and the
PCT Newsletter (see the end of this brochure). They cover the filing,
searching and publication of the international patent application, and
are payable in the currency, or one of the currencies accepted by your
Office (the receiving Office). For fees payable when you request
international preliminary examination, refer to (10), below. National
fees in the designated States become payable much later because national
processing is delayed if the PCT is used (see (13), below). In several
Offices, national fees are also lower for international patent applications
than they would be if direct national applications had been filed. An
applicant who is a natural person and who is a national of and resides
in a State whose per capita national income is below 3,000 US dollars
is entitled to a reduction of 75% of certain fees, including the
international fee (basic fee and designation fees). If there are several
applicants, each must satisfy those criteria. For more details, including
the list of the PCT Contracting States the nationals and residents of
which are eligible for such fee reductions, please refer to the PCT
Applicant’s Guide or contact the PCT Information Line (see
back page).
(5) Language of the international patent application
In general, an international patent application can be filed in any
language which your receiving Office is prepared to accept. Receiving
Offices are, however, obliged to accept filings in at least one language
which is both a language accepted by the competent International
Searching Authority that is to carry out the international search (see
(7), below) and a “publication language,” that is, one of
the languages in which international patent applications are published
(Chinese, English, French, German, Japanese, Russian and Spanish). You
therefore always have the option of filing your international patent
application in a language from which no translation is required for
either search or publication purposes. If you file your application
in a language which is not accepted by the International Searching
Authority that is to carry out the international search, you will be
required to furnish a translation of the application for the purposes
of international search.
(6) Claiming the priority of an earlier application
In an international patent application, you may claim the priority,
under the Paris Convention—and to a certain extent within the
framework of the World Trade Organization—, of an earlier patent
application for the same invention, whether it was a national, a
regional (for example, European) or an international (PCT) application,
for up to 12 months after the filing of that earlier application. If
you do not claim priority from an earlier application, the priority
date will be the international filing date of the international
application.
(7) Quality of the international search
International patent applications are subjected to an “international
search” by an International Searching Authority. International
search is a high quality search of the patent documents and other
technical literature in those languages in which most patent applications
are filed (English, French and German, and in certain cases, Chinese,
Japanese, Russian and Spanish). The high quality of the search is
assured by the standards prescribed in the PCT for the documentation
to be consulted, and by the qualified staff and effective search
methods of the International Searching Authorities, which are experienced
patent Offices that have been specially appointed to carry out
international searches. The following are the International Searching
Authorities: the national Offices of Australia, Austria, China, Japan,
the Republic of Korea, the Russian Federation, Spain, Sweden and the
United States of America, and the European Patent Office. For a given
international patent application, there may be one or more competent
International Searching Authorities (your PCT receiving Office can
supply details or you may consult the PCT Applicant’s Guide
and PCT Newsletter (see the end of this brochure)).
(8) Value of the international search report
The results of the international search are set out in an “international
search report” which is generally made available to you by the
fourth or fifth month after the international patent application is
filed. The international search report contains no comments on the
value of your invention but lists prior art documents relevant to the
claims of your international patent application and gives an indication
of the possible relevance of the citations to the questions of novelty
and inventive step (non-obviousness). This enables you to evaluate your
chances of obtaining patents in the countries you have designated. An
international search report which is favorable, that is, in which the
citations of prior art would appear not to prevent the grant of a
patent, assists you in the subsequent prosecution of your application
in those countries in which you wish to obtain protection. If a search
report is unfavorable (for example, if it lists prior art documents
questioning the novelty and/or inventive step of your invention), you
have the opportunity to centrally amend the claims in your international
patent application (to better distinguish your invention from the prior
art) or to withdraw the application before it is published. The high
quality of the international search assures you that any patent granted
is less likely to be successfully challenged, and thus provides
valuable input to investment decisions.
(9) Publication of the international application
If the international application has not been withdrawn earlier, it is
published by the International Bureau shortly after 18 months from the
priority date, together with the international search report, and
communicated by the International Bureau to each designated
Office.
(10) Option of international preliminary examination
Under the PCT system, you have the option to have an international
preliminary examination of your application carried out, on payment
of the relevant fees. This preliminary examination is made, on the
basis of the international search report, according to internationally
accepted criteria for patentability (novelty, inventive step and
industrial applicability). It is carried out by an International
Preliminary Examining Authority having qualifications similar to those
of the International Searching Authorities mentioned above. As an
applicant, you may participate actively in the international preliminary
examination, submitting amendments and arguments. The International
Preliminary Examining Authorities are the International Searching
Authorities mentioned above, except the national Office of Spain.
For a given international patent application, there may be one or
more competent International Preliminary Examining Authorities (your
PCT receiving Office can supply details or you may consult the PCT
Applicant’s Guide and the PCT Newsletter).
(11) Value of the international preliminary examination report
The results of the international preliminary examination are set out in
an “international preliminary examination report” which is
provided to you; copies are also sent by the International Bureau to
the Offices concerned. The report consists of an opinion on the
compliance with the international criteria mentioned above (see (10))
of each of the claims which has been searched. It provides you with an
even stronger basis on which to evaluate your chances of obtaining
patents, and, if the report is favorable, a stronger basis on which to
prosecute your application before the national and regional patent
Offices. The decision on the granting of a patent remains the
responsibility of each of the national or regional Offices designated
in the international patent application; the international preliminary
examination report is authoritative but is not binding on those Offices.
(12) Access by third parties to documents contained in the file
of the international patent application
Until international publication (18 months after the priority date),
no third person is allowed access to your international patent
application unless so requested or authorized by you. If you wish
to withdraw your application (and you do so in time before international
publication), international publication does not take place and, as a
consequence, no access by third parties is permitted. Upon international
publication, third parties can request copies of documents contained in
the file of the international application; such requests may be made
either to the International Bureau or the national or regional Offices,
depending on the document concerned.
(13) Delaying of the procedure before the national or regional Offices
When an international patent application has been filed, the national
procedures in relation to the majority of the designated Offices are
delayed until the end of the 30th month from the priority date (there
are some exceptions; for details, see the PCT Newsletter and the PCT
Applicant’s Guide—even longer delays are available before
some Offices). The delay normally gives you 18 months more before you
have to fulfill the national requirements (see (14), below) than if
you do not use the PCT. This additional time can be very useful for
evaluating the chances of obtaining patents and of exploiting your
invention commercially in the various designated countries, and for
assessing both the technical value of your invention as well as the
continued need for protection in those countries. In making such an
evaluation, you have the benefit of the international search report
and if you so requested, also the international preliminary
examination report.
(14) Start of the procedure before the national or regional Offices
It is only after you have decided whether, and in respect of which
States, you wish to proceed further with your application that you
must fulfill the various national requirements for entry into the
national phase. These requirements include paying national fees and,
in some cases, filing translations of the application as filed and/or
as amended. These steps must be taken, in relation to the majority of
PCT designated Offices, before the end of the 30th month from the
priority date (see (13), above). There may also be other requirements
in connection with the national phase—for example, the appointment
of local agents.
(15) Examination and further processing before the national or
regional Offices
The substantive examination and other processing of your international
patent application before the national and regional Offices is made
easier by the international search, which enables you to make necessary
amendments to the claims in the application even before the national or
regional procedure starts (see (8), above). It is facilitated even more by
the international preliminary examination procedure during which further
amendments are possible. You also achieve other savings in communications,
postage and translations as the work done during the international processing
is generally not repeated before each designated Office (for example, you
submit only one copy of the priority document instead of having to submit
several copies).
(16) Basic facts about the PCT itself
The PCT was concluded in 1970, amended in 1979 and modified in 1984 and
2001. It is open to States party to the Paris Convention for the Protection
of Industrial Property. Instruments of ratification or accession must be
deposited with the Director General of WIPO. The PCT created a Union. The
Union has an Assembly. Every State party to the PCT is a member of the
Assembly.
>Sources of Further Information
If, knowing these basic facts, you are considering filing an international
patent application or would like to have more detailed information, you
should consult the "PCT
Applicant's Guide" (which provides a complete set of
instructions for filing international patent applications), a patent
attorney or agent in your country, or your national Patent Office.
The forms are required for the filing of an international application
may be obtained free of charge from your national office. General
information may also be sought from WIPO.
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